Mothercare (UK) Ltd v Penguin Books

Date

7 July 1987

Legislation

Trade Marks Act 1938 ss 1, 4, 68

Keywords

Passing off; interim injunction; arguable case; serious issue to be tried; trade mark use

Counsel

Charles Sparrow QC, Mary Vitoria, William Aldous QC, John Baldwin

Solicitors

Peter Carter-Ruck & Partners; Slaughter & May

Judge

Dillon, Woolf, Bingham LJJ

Court

Court of Appeal (Civil Division)

Reported

[1988] RPC 113

Summary

The Claimant was the registered proprietor of the trade mark MOTHERCARE in respect inter alia of books. It sought an interim injunction based on causes of action in both passing off and trade mark infringement to restrain the Defendant publishers from publishing a book entitled 'Mother Care/Other Care' (which had nothing to do with the Claimant).

Decision

As for passing off, applying E. Warnink v Townsend & Sons [1979] AC 731, the book's title made no misrepresentation that it was associated with the Claimant in any way. Moreover, since the book was not in competition with any book the Claimant might publish, there was no reasonably foreseeable possibility of the Claimant suffering any damage. Accordingly there was no serious issue to be tried, and so no grounds for an interim injunction: American Cyanamid v Ethicon [1975] AC 396.

Similarly there was no serious issue to be tried in relation to the claim for trade mark infringement under s. 4(b) of the Trade Marks Act 1938. Applying Bismag v Amblins [1940] Ch 667, the use of the trade mark must be use in a trade mark sense. The words 'mother care' in the title of the book were not used in such a sense, but descriptively.

This case was applied in BACH FLOWER REMEDIES Trade Mark [1992] RPC 439, and discussed in West v. Fuller Smith & Turner Plc [2003] FSR 44.

Note that the Trade Marks Act 1938 has been repealed and replaced by the Trade Marks Act 1994.